Carnegie Mellon University (“CMU”) filed a motion for attorney fees pursuant to 35 U.S.C. Section 285, seeking attorney fees of approximately $17.2 Million as a prevailing party at the jury trial against Marvell Technology Group (“Marvell”) that resulted in a jury verdict of over $1 billion. The jury also found that Marvell’s infringement was willful.

Section 285 provides that “the court in exceptional cases may award reasonable attorney fees to the prevailing party.” “Although an attorney fee award is not mandatory when willful infringement has been found, precedent establishes that the court should explain its decision not to award attorney fees.” Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 37 (Fed. Cir. 2012) cert. denied, 133 S. Ct. 1291 (2013) (citing Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1349 (Fed. Cir. 2011)). As the district court explained, “[t]he inquiry into attorney fees is related to both willfulness and enhanced damages as explained under § 284, given similar considerations are relevant to both. Id. at 38. ‘However, the situations in which § 284 and § 285 may be invoked are not identical’ because attorney misconduct or other ‘aggravation of the litigation process’ may weigh heavily in regards to attorney fees, but not as to the enhancement of damages. Id.”
The district court also explained that “[w]hen deciding whether to award attorney fees under § 285, a district court engages in a two-step inquiry. First, the Court ‘must determine whether the prevailing party has proved by clear and convincing evidence that the case is exceptional,’ and then, if the case is exceptional, the Court must decide whether awarding attorney fees is justified. MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907, 915-16 (Fed. Cir. 2012). A case may be deemed exceptional under § 285 where there has been ‘willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation, conduct that violates Federal Rule of Civil Procedure 11, or like infractions.’ Id. Litigation misconduct and ‘unprofessional behavior may suffice, by themselves, to make a case exceptional under § 285.’ Id. at 919.”

CMU asserted that attorney fees should be awarded not only because of the jury’s finding of willfulness, but also because of Marvell’s litigation tactics, which CMU claimed caused unnecessary delays and drove up litigation costs, including contradictory non-infringement and invalidity defenses, wasteful discovery and other litigation tactics.

In response, Marvell asserted that the infringement was not willful, and that even if it was, the case was not exceptional. Marvell also argued that CMU’s allegations of litigation misconduct were baseless and exaggerated and that the defenses it presented were in good faith and supported by the evidence at trial. Finally, Marvell also argued that CMU’s estimates of attorney fees were excessive and not tied to the alleged misconduct.

The district court then explained that this was one of many post-trial motions that were filed by the parties and that this case would be appealed to the Federal Circuit. “From the Court’s perspective, this motion is one of a host of post-trial motions filed by the parties in this case and they have made it clear there will be an appeal to the Federal Circuit, regardless of the Court’s rulings on same. (Docket No. 881 at 35) (‘the Court of Appeals –everybody knows we’ll get there.’). As an appeal is virtually certain, the Court finds that it is premature to decide the contested issues of attorney fees and to undertake the exceptional task of reviewing the calculations of same, at this juncture. Instead, the Court is persuaded by the procedure employed by Judge Yohn of the U.S. District Court for the Eastern District of Pennsylvania, whereby he denied a motion for attorney fees, without prejudice, to the parties’ right to renew the motion and arguments after the appeal was resolved by the Federal Circuit. Teva Pharm. Indus. Ltd. v. AstraZeneca Pharms. LP, No. 08-4786, 2012 WL 3063994 (E.D. Pa. July 26, 2012). After the Circuit adjudicated the appeal, the parties then renewed their motions and the Court was in a better position to assess whether an award of attorney fees was appropriate.”

The district court here decided to follow a similar procedure and hold the attorney fee motion until after the appeal was decided. “Again, all of the Court’s forthcoming rulings on these issues will undoubtedly be appealed. (Docket Nos. 880 at 29; 881 at 35). Thus, the appropriate course of action for “economy of time and effort for itself, for counsel and for litigants” is to deny the instant motion, without prejudice, to be renewed after the case is fully adjudicated before the Federal Circuit and/or further proceeding at the trial level. Bechtel Corp. v. Local 215, Laborers’ Int’l Union, 544 F.2d 1207, 1215 (3d Cir.1976).”

Stan Gibson, an experienced technology and IP trial lawyer, represents inventors, manufacturers, owners and others in litigation centering on complicated technology. Stan's practice is national in scope and he represents both plaintiffs and defendants and has litigated dozens of cases on behalf of his clients, taking many of them to trial. Although most cases settle, Stan's ability to take cases to trial enhances their value and drives favorable verdicts and settlements. Contact him at 310.201.3548 or SGibson@jmbm.com.

Greg Cordrey, an experienced patent litigator and former flight test engineer, represents a wide range of industries including medical device, computer, e-commerce, semiconductor, automotive, aircraft, and consumer products. He has litigated patent cases nationwide and has practiced before the Federal Circuit and the U.S. Patent and Trademark office as a registered patent attorney with experience in concurrent litigation and patent reexamination proceedings. Greg is recognized as one of the "Best Lawyers in America" in IP Law, as well as a "Super Lawyer" and "Rising Star." Contact him at 949.623.7236 or GCordrey@jmbm.com.

Rod Berman is recognized by the Daily Journal as one of the top 30 intellectual property attorneys in the State of California, and by the Los Angeles Business Journal as one of the top 100 attorneys in Los Angeles. Rod's practice focuses on patent, trademark, copyright, unfair competition and internet responsibilities and includes counseling, litigation, opinions, licensing and prosecution. In addition to being a registered patent attorney, Rod is a court-recognized expert in patent and trademark law, and has successfully argued before the Federal Circuit. Contact Rod at 310.201.3517 or RBerman@jmbm.com.

Andrew Shadoff, is a litigation associate who has assisted in prosecuting and defending patent infringement lawsuits involving mechanical devices. He has drafted successful summary judgment motions and pretrial motions in limine, and has assisted with trial and witness preparation. Contact him at 310.712.6856 or AShadoff@jmbm.com.

Joe Mellema's practice focuses on litigation in federal and state courts, including the protection and enforcement of intellectual property rights, and business and commercial disputes. He has handled patent, trademark, copyright, trade secret, unfair business practices, antitrust, and business and commercial lawsuits in all phases of litigation and arbitration. In addition to a law degree, he has dual degrees in electrical engineering and physical sciences, and was formerly a systems engineer at Raytheon Company. Contact him at 949.623.7232 or at JMellema@jmbm.com.

Rachel Capoccia

Rachel Capoccia focuses on technology-based litigation and counseling, with an emphasis on patent litigation, copyright litigation and other technology-related matters. Her legal experience is complemented by 10 years working at IBM as a software engineer before law school, during which she led a team of engineers who developed computer graphics software and computer aided design systems. She represents clients in all phases of patent infringement matters involving diverse areas of technology. Contact Rachel at 310.201.3521 or RCapoccia@jmbm.com.

Jessica Newman is a litigation associate, and a member of JMBM's Patent Litigation Group. She is involved in all aspects of litigation and has assisted in representing clients in a variety of industries with regards to patent infringement and copyright infringement issues. Contact her at 310.785.5372 or JNewman@jmbm.com.